The opinion
On Motion for Rehearing
McGUIRE, District Judge.
Motion for rehearing denied.
The movants claim that the Court misapprehended the point at issue in that the alleged invention was not in discovering the source of the trouble but that it consisted of “tracking down the source of the trouble and then solving the problem in a sim-ple and economical way." [Emphasis supplied.]
The Court in its memorandum of May 20, 1954 asserted substantially this: “The invention, if any, lies in the discovery by the plaintiffs of the cause of the difficulties encountered * * * and its obviation." [Emphasis supplied.] If this is not what is claimed, then Claim 9 is not definitive of the alleged invention, for that refers to a method of conversion relative to the conversion of natural gas, etc. by reaction with sulphur in the presence of catalysts, the improvement consisting of the reduction of the higher molecular weight hydrocarbon content to such an extent that in its reaction with sulphur in the presence of the catalyst the result is “to substantially completely eliminate the formation of tarry materials in the catalyst and resulting fouling thereof.” This, it seems, is specific and the Court assumed it defined the claimed invention.
In this case there were no such difficulties which could not be overcome by those skilled in the art. That they were does not raise mere technical skill or novelty of approach to the dignity of invention; commercial success alone is not determinative — it is merely evidential. It cannot fill the basic gap. Textile Machine Works v. Louis Hirsch Textile Machines, 302 U.S. 490, 498-499 , 58 S. Ct. 291 , 82 L.Ed. 382 .
With reference to the function of the Court in an R.S. § 4915 proceeding, let it simply be reiterated that “The question for us is not whether in our opinion there was invention, but whether the finding that there was none is consistent with the evidence. ‘The judicial function is exhausted when there is found to be a rational basis for the conclusions approved by the administrative body. * * * ’ ‘Under the rule settled in this jurisdiction, while we are not absolutely bound by a chancellor’s findings of fact, we do not disturb them * * * unless upon an examination of the evidence they are clearly wrong.’ ” Abbott v. Coe, 71 App.D.C. 195 , 109 F.2d 449, 451-452 .
The proceeding was a proceeding de novo and was not merely a review of the Patent Office proceedings.
The basic underlying fundamental and controlling reason for the Court’s action, apart from others of a tangential character, is that what was done does not rise, as has been said above, to the dignity of invention.
Further, by way of corollary, the Court adopts for elaboration in extenso the memorandum filed by the Commissioner of Patents in opposition to the motion for rehearing.
Order accordingly and the cause will proceed to judgment.